DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-15, in the reply filed on 7/10/2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
Claim 1 states that the varnish composition is substantially free of polytetrafluoroethylene (PTFE). Note that the instant specification discloses the following (0086).
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In view of this passage, the limitation “substantially free of polytetrafluoroethylene” has been interpreted to require that the claimed varnish composition comprises less than 1000 ppm PTFE.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13: Claim 13 depends from claim 1 and states that the coating composition is “substantially aqueous”. Note that the phrase “substantially aqueous” is not defined in the specification, its meaning therefore is unclear. Is the claim intended to require that the coating composition comprises water as part of a liquid carrier component? If so, what is the minimum water content that is required to qualify as “substantially” aqueous? The scope of the claim is therefore unclear.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 depends from claim 1 and states that the lubricant comprises polyethylene, polypropylene, carnauba wax, and/or lanolin wax. Note, however, that
independent claim 1 requires that the lubricant comprises microcrystalline polyethylene, and
claim 9 does not contain any language that requires the species “polyethylene” to be a separate component from said microcrystalline polyethylene.
As currently written, the polyethylene recited in claim 9 therefore can be the same compound as the microcrystalline polyethylene. Claim 9 therefore does not further limit the parent claim, as any composition comprising a microcrystalline polyethylene will necessarily comprise polyethylene. As such, there is no species of composition that would fall within the scope of independent claim 1 that would not also fall within the scope of claim 9.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 8, 9, 11-15, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al, CN1676318.
The examiner notes that a machine translation of Kono was used for the preparation of this Action.
Kono discloses the production of a varnish composition (for claim 1) used to make a finishing film, wherein said composition comprises an acrylic resin, corresponding to the claimed film-forming resin which is an acrylic polymer (for claims 1, 2), an isocyanate crosslinking agent, corresponding to the claimed crosslinking material (for claim 1), and a polyolefin wax such as microcrystalline polyethylene, corresponding to the claimed lubricant (for claim 1) (title, abstract, ¶0009, 0027, 0029, 0031). Said acrylic resin is a thermoset (for claim 15) (¶0027) and is characterized by a glass transition temperature (Tg) of 30 to 90 °C (for claim 5) (¶0009). Kono does not require the addition of PTFE; the prior art therefore reads on the production of varnish compositions that are free of PTFE (for claim 1). The prior art composition may further comprise an antifoamer (i.e., a defoamer ) (for claim 12) and a dull finish agent (i.e., a matting agent) (for claim 14) (¶0028).
Regarding claim 3: Claim 3 depends from claim 2 and recites additional limitations regarding the film-forming resin which is a polyester; however, it is noted that the claim does not recite any limitations requiring the presence of a polyester. The prior art composition therefore corresponds to the claimed invention wherein the film-forming resin is acrylic as noted above.
Regarding claim 4: The prior art acrylic polymer is disclosed to be a (co)polymer obtained by polymerizing monomers from the disclosed embodiments (¶0020-0023, 0034); Kono does not require a multistage polymerization process and therefore corresponds to the claimed acrylic polymer which is a one stage resin.
Regarding claims 8, 11: Kono exemplifies the production of compositions comprising 20 to 40% of the crosslinking agent (see Table 1), overlapping the claimed range (for claim 8). The prior art composition further comprises about 0.25 to 5.0 parts of the wax per 100 parts (¶0029, 0031), -i.e., the wax content is about 0.25 to 5.0 wt%, overlapping the claimed range (for claim 11).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05). It therefore would have been obvious to one of ordinary skill in the art to prepare a varnish comprising the required amounts of crosslinking agent (for claim 8) and wax (for claim 11) in view of the teachings of Kono.
Regarding claim 9: Claim 9 depends from claim 1 and states that the lubricant comprises polyethylene, polypropylene, carnauba wax, and/or lanolin wax. Note that the claim does not contain any language that requires the species “polyethylene” to be a separate component from the microcrystalline polyethylene. The prior art use of microcrystalline polyethylene therefore corresponds to the claimed invention wherein the lubricant comprises polyethylene.
Regarding claim 13: Kono teaches that the coating is dried at 60 to 140 C to evaporate water (¶0017)-i.e., the composition is aqueous.
Regarding claim 23: Kono does not teach the inclusion of a polyester grafted acrylic resin.
Kono does not specifically disclose the production of a composition comprising a microcrystalline polyethylene wax.
It has been held that the selection of a known material based on its suitability for its intended is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07).
As discussed above, Kono discloses the production of a varnish composition comprising an acrylic resin, a crosslinking agent, and a wax. Furthermore, the prior art teaches that microcrystalline polyethylene was a suitable embodiment of said wax. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a varnish comprising a microcrystalline polyethylene wax in view of the teachings of Kono (for claim 1).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al, CN1676318, as applied to claim 1 above, and further in view of Bauer et al, published in Journal of Polymer Science: Polymer Physics Edition vol. 18.
As discussed earlier in this Action, Kono discloses the production of a varnish composition comprising an acrylic resin, a crosslinking agent, and wax. Said acrylic resin may be a hydroxy- or carboxy functional resin (¶0019, 0021, 0022).
Kono is silent regarding the use of a crosslinking material comprising a melamine material.
As taught by Bauer, it was known in the art that melamine-formaldehyde resins, corresponding to the claimed crosslinking agent comprising 100 wt% (for claim 7) of a melamine material (for claim 6) were known in the art as suitable crosslinking agents for hydroxy- and carboxy functional resins used in coating applications (abstract, page 1997: Introduction).
As noted above, Kono discloses the production of a varnish (i.e., a coating composition) which comprises an acrylic resin which may be a hydroxy- or carboxy functional resin. As taught by Bauer, it was known in the art to use a melamine formaldehyde resin as a crosslinking agent for hydroxy- and carboxy functional acrylic resins in coating applications. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the varnish of Kono by substituting a melamine formaldehyde resin as the crosslinking agent (for claims 6, 7), with the reasonable expectation of obtaining a final varnish composition capable of curing to form a film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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